IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`
`MARSHALL DIVISION
`
`Plaintiffs,
`
`v.
`
`§
`VERSATA SOFTWARE, INC., FIK/A
`§
`TRILOGY SOFTWARE, INC.;
`§
`VERSATA DEVELOPMENT GROUP,
`INC.,FIK/A TRILOGY DEVELOPMENT §
`GROUP, INC.; AND VERSATA
`§ CIVIL ACTION NO. 2:07-cv-153-CE
`COMPUTER INDUSTRY SOLUTIONS,
`§
`INC., FIK/A TRILOGY COMPUTER
`§
`INDUSTRY SOLUTIONS, INC.,
`§ JURY TRIAL DEMANDED
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`SAP AMERICA, INC. AND SAP AG
`
`Defendants.
`
`DEFENDANTS SAP AMERICA. INC. AND SAP AG'S PATENT RULE 3-3 AND 3-6
`AMENDED INVALIDITY CONTENTIONS FOR U.S. PATENT NOS. 5,708,798,
`6,002.854. 5,878,400, 6,553,350, and 7,069,235
`
`1047518_3
`
`VERSATA EXHIBIT 2066
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`TABLE OF CONTENTS
`
`PAGE NO.
`INTRODUCTION .............................................................................................................. 1
`
`THE ASSERTED PATENTS............................................................................................. 7
`
`I.
`
`II.
`
`A.
`
`P.R. 3-3(A), (B), AND (C) ......................................................................................7
`1. Invalidity of the Asserted Claims of the ‘798 Patent Under 35
`U.S.C. § 102 ......................................................................................................12
`a. All Asserted Claims of the ‘798 Patent Are Anticipated
`by the Prior Art Cited in Appendices A-1, C-1, E-1 ............................ 12
`b. Invalidity of Asserted Claims 1-6 of the ‘798 Patent
`Under 35 U.S.C. § 103 ......................................................................... 13
`(1) Asserted Claims 1-5 of the ‘798 Patent Would
`Have Been Obvious.................................................................. 15
`(2) Asserted Claim 6 of the ‘798 Patent Would
`Have Been Obvious.................................................................. 18
`c. The Asserted Claims of the ‘798 Patent Also Would
`Have Been Obvious Under § 103 and Comiskey................................. 20
`2. Invalidity of the Asserted Claims of the ‘854 Patent Under
`35 U.S.C. § 102 .................................................................................................20
`3. Invalidity of the Asserted Claims of the ‘854 Patent Under
`35 U.S.C. § 103 .................................................................................................21
`a. Asserted Claims 1, 2, 5, 6-9, 10-12, 13-15, 19-22, 23,
`24, 25, 26, 30, 40, 41-43, 44, and 49-51 of the ‘854
`Patent 23
`b. Asserted Claims 4, 31, and 39 of the ‘854 Patent ................................ 26
`c. Asserted Claims 32-37 of the ‘854 Patent............................................ 27
`d. Asserted Claims of the ‘854 Patent Also would Have
`Been Obvious Under § 103 and Comiskey .......................................... 28
`4. Invalidity of the Asserted Claims of the ‘400 Patent Under
`35 U.S.C. § 102 .................................................................................................29
`
`
`
`- i -
`
`

`

`5. Invalidity of the Asserted Claims of the ‘400 Patent Under
`35 U.S.C. § 103 .................................................................................................30
`a. Asserted Claims 1-2, 8-9, 11, 26-27, 31-32, 37, 39, 41,
`47, 49, and 51 of the ‘400 Patent Would Have Been
`Obvious ................................................................................................ 31
`b. Asserted Claims 3-6, 10, 33-36, 42-45, and 50 of the
`‘400 Patent Would Have Been Obvious............................................... 32
`c. Asserted Claims 7, 12, 30, 38, 46, and 52 of the ‘400
`Patent Would Have Been Obvious....................................................... 33
`d. Asserted Claim 40 of the ‘400 Patent Would Have Been
`Obvious ................................................................................................ 34
`e. Asserted Claim 48 of the ‘400 Patent Would Have Been
`Obvious ................................................................................................ 35
`f. Asserted Claims of the ‘400 Patent Also would Have
`Been Obvious Under § 103 and Comiskey .......................................... 36
`6. Invalidity of the Asserted Claims of the ‘350 Patent Under
`35 U.S.C. § 102 .................................................................................................36
`7. Invalidity of the Asserted Claims of the ‘350 Patent Under
`35 U.S.C. § 103 .................................................................................................38
`a. Asserted Claims 27-29 of the ‘350 Patent Would Have
`Been Obvious ....................................................................................... 39
`b. Asserted Claims 1-6, 8, 12-13, 16-23, 25, and 26 of the
`‘350 Patent Would Have Been Obvious............................................... 40
`c. Asserted Claims 7 and 24 of the ‘350 Patent Would
`Have Been Obvious.............................................................................. 40
`d. Asserted Claim 9 of the ‘350 Patent Would Have Been
`Obvious ................................................................................................ 41
`e. Asserted Claims 10 and 11 of the ‘350 Patent Would
`Have Been Obvious.............................................................................. 42
`f. The Asserted Claims of the ‘350 Patent Also would
`Have Been Obvious Under § 103 and Comiskey ................................. 43
`
`ii
`
`

`

`8. Invalidity of the Asserted Claims of the ‘235 Patent Under
`35 U.S.C. § 102 .................................................................................................44
`9. Invalidity of the Asserted Claims of the ‘235 Patent Under
`35 U.S.C. § 103 .................................................................................................45
`a. Asserted Claims 1, 2, 5, 9, 10, 20, 23, and 26 of the ‘235
`Patent Would Have Been Obvious....................................................... 47
`b. Asserted Claim 3 of the ‘235 Patent Would Have Been
`Obvious ................................................................................................ 49
`c. Asserted Claims 4, 5, 12, 15, 16, 24, and 27 of the ‘235
`Patent Would Have Been Obvious....................................................... 50
`d. Asserted Claim 6 of the ‘235 Patent Would Have Been
`Obvious ................................................................................................ 52
`e. Asserted Claims 8 and 17 of the ‘235 Patent Would
`Have Been Obvious.............................................................................. 53
`f. Asserted Claim 13 of the ‘235 Patent Would Have Been
`Obvious ................................................................................................ 55
`g. Asserted Claims 14 and 25 of the ‘235 Patent Would
`Have Been Obvious Under § 103......................................................... 56
`P.R. 3-3(D) .........................................................................................................57
`1. Claims 1-6 of the ‘798 Patent Are Invalid Under 35 U.S.C.
`§ 112 57
`2. Claims 1-5, 10-12, 14, 19-25, and 39-44 of the ‘854 Patent Are
`Invalid Under 35 U.S.C. § 112..........................................................................58
`3. Claims 2-3, 9-11, 26-27 and 31 of the ‘400 Patent Are Invalid
`Under 35 U.S.C. § 112 ......................................................................................59
`4. Claims 1 and 17 of the ‘350 Patent Are Invalid under 35 U.S.C.
`§ 112 60
`5. Claims 1-6, 8-10, 12-18, 20, and 23-27 of the ‘235 Patent Are
`Invalid under 35 U.S.C. § 112...........................................................................60
`6. Claim 24 of the ‘235 Patent Is Invalid Under 35 U.S.C. § 112.........................60
`
`B.
`
`III.
`
`ACCOMPANYING DOCUMENT PRODUCTION (P.R. 3-4) ...................................... 61
`
`iii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`PAGE NO.
`
`In re Comiskey, 499 f.3d 1365 (Fed. Cir. 2007)......................................................................... 20,28,36,43
`
`
`
`iv
`
`

`

`I.
`
`INTRODUCTION
`
`Pursuant to P.R. 3-3, P.R. 3-6, and the Court’s September 18, 2008 Order Granting the
`
`Joint Agreed Motion to Extend the Deadline for the Parties to Comply with P.R. 3-6, Defendants
`
`SAP AG and SAP America, Inc. (“SAP”) submit these Amended Invalidity Contentions
`
`regarding the Asserted Claims of U.S. Patent Nos. 5,708,798 (“the ‘798 Patent”); 6,002,854 (“the
`
`‘854 Patent”); 5,878,400 (“the ‘400 Patent”); 6,553,350 (“the ‘350 Patent”); and 7,069,235 (“the
`
`‘235 Patent”) (collectively, “the Patents-in-suit”). These Amended Invalidity Contentions update
`
`and incorporate by reference the entirety of SAP’s Invalidity Contentions served on Dec. 19,
`
`2007 and on May 9, 2008, including the prior art, charts, briefs and appendices.
`
`In its March 28, 2008 Supplemental Disclosure of Asserted Claims and Infringement
`
`Contentions (“Supplemental Infringement Contentions”), Versata asserted that certain of
`
`Defendants’ products infringe the following claims of the Patents-in-suit: Claims 1-6 of the ‘798
`
`Patent; Claims 1, 2, 4-15, 19-26, 30-37, 39-44, and 49-51 of the ‘854 Patent; Claims 1-12, 26-27,
`
`and 30-52 of the ‘400 Patent; Claims 1-13 and 16-29 of the ‘350 Patent; and Claims 1-6, 8-10,
`
`12-17, 20, and 23-27 of the ‘235 Patent (“Asserted Claims”).
`
`
`
`Versata’s Supplemental Infringement Contentions lack a proper and complete disclosure
`
`of Versata’s infringement contentions and, thus, are deficient under P.R. 3-1 because they do not
`
`provide adequate information for SAP to use in preparing this responsive disclosure. For
`
`example, Versata has accused a variety of SAP products of infringing certain claims without
`
`including in Versata’s infringement claim chart any entries corresponding to those accused
`
`products for certain limitations of those claims. Versata’s Supplemental Infringement
`
`Contentions therefore fail to provide the proper notice of what functionality/activity Versata
`
`contends falls within the scope of the asserted claims, and thereby deprives SAP of the ability to
`
`(1) identify corresponding functionality/activity in the prior art, and (2) demonstrate that the
`
`
`
`- 1 -
`
`

`

`breadth of Versata’s Supplemental Infringement Contentions reflects violations of § 112. SAP
`
`therefore reserves its right to supplement this disclosure on that basis. As another example,
`
`Versata has failed to provide adequate disclosure in its Supplemental Infringement Contentions
`
`for claim 18 of the ‘235 Patent, and therefore, SAP is not required to include any invalidity
`
`contentions on that claim. SAP therefore reserves its right to supplement this disclosure on that
`
`basis.
`
`Since Versata still has not provided SAP with complete source code and operational
`
`embodiments for Versata’s products, which have been requested through discovery and are
`
`highly relevant to the existence of any Versata on-sale bar or other § 102 prior art, SAP reserves
`
`the right to amend or supplement its Invalidity Contentions after receipt of Versata’s complete
`
`production of source code, operational embodiments, and other information regarding its
`
`products.
`
`
`
`SAP reserves the right to introduce evidence useful to explain, amplify, illustrate or
`
`demonstrate the prior art disclosed in these Invalidity Contentions. For example, for any given
`
`quotation, excerpt or page citation, SAP reserves the right to introduce other text and images
`
`(such as surrounding, related, or explanatory text or images) from the same or a related
`
`document that may help to provide context to the quotation, excerpt or page citation. Similarly,
`
`SAP reserves the right to present system demonstrations, visual aids and screen shots from and
`
`testimony concerning the disclosed prior art systems, and to present explanatory text (such as
`
`“help” files) relating to such systems. SAP also reserves the right to introduce evidence relating
`
`to prior invention, publication, offers for sale, and third party knowledge and use of such
`
`systems, including any evidence relating to any prior art proofs that may develop upon further
`
`discovery.
`
`2
`
`

`

`For any item of prior art asserted in any SAP Invalidity Contention as § 102 or § 103 art,
`
`SAP reserves the right to supplement and update its contentions with more evidence supporting
`
`that prior art. Each item of prior art asserted in any of SAP’s Invalidity Contentions under § 102
`
`or § 103 or any subsections, also is hereby asserted under any and all applicable sub-sections of
`
`§ 102 and § 103. Any reference in any of SAP’s Invalidity Contentions to any specific sub-
`
`section of § 102 or § 103 is therefore exemplary, and is not intended to limit SAP’s contentions
`
`regarding the full gamut of § 102 or § 103 sub-sections satisfied by that prior art.
`
`SAP reserves the right to introduce evidence to establish the scope and extent of
`
`knowledge of the ordinarily skilled person in the art as of the filing dates of the Patents-in-suit.
`
`SAP further reserves the right to introduce objective evidence of obviousness, such as knowledge
`
`in the art of some or all of the individual elements of the Asserted Claims, contemporaneous
`
`invention, lack of commercial success, lack of surprising results, and related evidence to
`
`establish the obviousness of the Asserted Claims.
`
`SAP also reserves the right to amend or supplement its Invalidity Contentions after the
`
`Court issues its additional claim construction orders, if and when Versata is granted leave to
`
`submit further Supplemental Infringement Contentions, in response to newly discovered prior art
`
`or invalidity defenses, or as otherwise appropriate.
`
`SAP also reserves the right to amend or supplement its Invalidity Contentions to include:
`
`a.
`
`products of Versata, Trilogy and pcOrder.com as invalidating prior art, based on
`
`information learned in discovery, newly discovered materials, or any other
`
`relevant information;
`
`b.
`
`SAP’s own products (e.g., products relating to configuration, pricing, and
`
`eCommerce) and product documentation that may constitute prior art that
`
`3
`
`

`

`anticipates or renders obvious the Asserted Claims of the Patents-in-suit in light
`
`of the Court’s claim construction and/or Versata’s Infringement Contentions
`
`(SAP reserves the right to amend or supplement these contentions as appropriate
`
`based on its ongoing investigation and analysis, including, for example, by
`
`introducing testimony, demonstrations, or visual aids relating to such SAP
`
`products); and
`
`c.
`
`information about third party products, systems, publications and/or patent
`
`applications.
`
`SAP’s Invalidity Contentions are based on the Court’s August 19, 2008 Claim
`
`Construction Order and claim constructions that SAP has done its best to infer from Versata’s
`
`Supplemental Infringement Contentions, and therefore should not be construed as any admission
`
`by SAP regarding the proper construction of any Asserted Claim, or regarding what subject
`
`matter falls within the scope of any Asserted Claim when properly construed. To the extent that
`
`Versata later advances a claim construction position that is of greater breadth than that which
`
`SAP has inferred from Versata’s Supplemental Infringement Contentions, SAP reserves the right
`
`to supplement these Invalidity Contentions to include prior art that is within the scope of such a
`
`broad claim construction. SAP’s Invalidity Contentions also should not be deemed to represent
`
`or limit the claim constructions that SAP will advance in this matter. To the extent that SAP’s
`
`Invalidity Contentions may reflect constructions of claim limitations consistent with or implicit
`
`in Versata’s Infringement Contentions, no inference should be drawn that SAP agrees with
`
`Versata’s claim constructions, and SAP expressly reserves its right to put forth its own claim
`
`constructions and contest Versata’s proposed constructions of the Asserted Claims. SAP’s
`
`Invalidity Contentions may be in the alternative to any position it may ultimately take as to any
`
`4
`
`

`

`claim construction issues. For these reasons, SAP’s Invalidity Contentions should not be
`
`deemed to relate to the noninfringement positions SAP will advance in this matter.
`
`In the attached Exhibits 177-254, SAP provides, pursuant to P.R. 3-3(c), charts
`
`specifically identifying where in each item of prior art (whether a prior art publication, patent or
`
`prior art system) each claim limitation of each Asserted Claim is found. The cited portions of
`
`prior art references are exemplary and representative of the content of the prior art references,
`
`and should be understood in the context of the reference as a whole, as understood by one of
`
`ordinary skill in the art at the relevant time. The charts provide illustrative quotes and page
`
`citations, which are not meant to be limiting. SAP reserves the right to rely on other portions of
`
`the prior art references as additional evidence that the prior art discloses a claim element, or that
`
`a skilled person would have been motivated to combine references to arrive at the claimed
`
`invention. Each SAP chart relating to a prior art system should be understood to incorporate by
`
`reference all the charts for all other printed publications or patents describing that prior art
`
`system. For example, each chart relating to the COSSACK system should be understood to
`
`incorporate by reference all other charts to printed publications describing the COSSACK system.
`
`SAP reserves the right to establish what was known to the ordinarily skilled person in the
`
`art through other information, including publications, products or testimony. SAP reserves the
`
`right to supplement its contentions with additional citations and evidence if such
`
`supplementation is appropriate. The references cited in the attached Exhibits may disclose the
`
`elements of the Asserted Claims either explicitly or inherently or may be relied upon to show the
`
`state of the art in the relevant timeframes.
`
`SAP is currently unaware of the extent, if any, to which Versata will contend that
`
`limitations of the Asserted Claims are not disclosed in the art identified by SAP as anticipatory.
`
`5
`
`

`

`To the extent that an issue arises with respect to any such limitation, SAP reserves the right to
`
`identify references and combinations that may render inherent, implicit, and/or obvious the
`
`existence of the allegedly missing limitation in the disclosed method or apparatus.
`
`SAP’s investigation regarding the invalidity of the Patents-in-suit is ongoing, including
`
`reasons for invalidity based on prior publication, public use, or on-sale bar under 35 U.S.C.
`
`§ 102(b), prior art patents under 35 U.S.C. § 102(e), improper inventorship and derivation under
`
`35 U.S.C. § 102(f), prior invention under 35 U.S.C. § 102(g), obviousness under 35 U.S.C.
`
`§ 103, failure to comply with 35 U.S.C. § 112 (lack of enablement, inadequate written
`
`description, indefiniteness and failure to disclose the best mode), or unpatentable subject matter
`
`under 35 U.S.C. § 101. Accordingly, the following contentions are subject to revision and
`
`amendment pursuant to Federal Rule of Civil Procedure 26(e) and the Orders of record in this
`
`matter to the extent appropriate in light of SAP’s further investigation and discovery, any
`
`supplementation by Versata of its Infringement Contentions, the Court’s construction of the
`
`claims at issue, and the review and analysis of expert witnesses. Moreover, it is SAP’s
`
`understanding that invalidity positions based on unpatentable subject matter under § 101 and best
`
`mode under § 112 are not required to be disclosed by P.R. 3-3. SAP therefore reserves its right
`
`to assert such positions in this matter, even though they are not included in these Invalidity
`
`Contentions.
`
`SAP specifically reserves the right to modify, amend, or supplement these Invalidity
`
`Contentions in accordance with this Court’s Orders and P.R. 3-6, as additional documents and
`
`information become available (including documentation and information that Versata has not yet
`
`produced or provided), and as discovery and investigation proceed. For example, SAP
`
`specifically reserves the right to modify its Invalidity Contentions regarding the relevant dates of
`
`6
`
`

`

`all prior art publications, patents and systems, including but not limited to the earliest priority
`
`date, on-sale bar date, and date of earliest disclosure or public availability, and date of prior
`
`invention. SAP further reserves the right to introduce and use such supplemental evidence and
`
`materials at trial.
`
`The new Appendices introduced here (E-1 through E-10 and F-1 through F-5) and
`
`Exhibits 177- 254 are in addition to the Prior Art (charted in Ex. 1-176), Appendices (A, B, C,
`
`and D), and Briefs in support of SAP’s Invalidity Contentions served December 19, 2007 and
`
`May 9, 2008. All such prior Invalidity Contentions are incorporated here.
`
`Appendices E-1 – E-5 contain a list of all prior art that is charted as reflected in Exhibits
`
`177 - 254 (some of these are updates of the same prior art charted earlier). Appendix F contains
`
`one obviousness chart for each Patent-in-suit setting forth combinations of Prior Art references.
`
`
`
`II.
`
`THE ASSERTED PATENTS
`
`A.
`
`P.R. 3-3(a), (b), AND (c)
`
`Because these SAP Supplemental Invalidity Contentions incorporate by reference in their
`
`entirety SAP’s Invalidity Contentions served in December 2007 and May 2008, it is appropriate
`
`here to explain the various Appendices and Exhibits.
`
`Appendices A and B (served in December 2007) identify Prior Art that anticipates or
`
`renders obvious each of the Asserted Claims of the ‘798 Patent, the ‘854 Patent, the ‘400 Patent,
`
`the ‘350 Patent, and the ‘235 Patent. Appendices A-1 through A-10 contain lists of prior art for
`
`which prior art charts (in Exhibits 1-137) have been prepared for each of the Patents-in-suit as
`
`follows:
`
`Appendix A-1
`
`§ 102 Prior Art to the ‘798 Patent (Charted Prior Art)
`
`Appendix A-2
`
`§ 102/103 Prior Art to the ‘798 Patent (Charted Prior Art)
`
`7
`
`

`

`Appendix A-3
`
`§ 102 Prior Art to the ‘854 Patent (Charted Prior Art)
`
`Appendix A-4
`
`§ 102/103 Prior Art to the ‘854 Patent (Charted Prior Art)
`
`Appendix A-5
`
`§ 102 Prior Art to the ‘400 Patent (Charted Prior Art)
`
`Appendix A-6
`
`§ 102/103 Prior Art to the ‘400 Patent (Charted Prior Art)
`
`Appendix A-7
`
`§ 102 Prior Art to the ‘350 Patent (Charted Prior Art)
`
`Appendix A-8
`
`§ 102/103 Prior Art to the ‘350 Patent (Charted Prior Art)
`
`Appendix A-9
`
`§ 102 Prior Art to the ‘235 Patent (Charted Prior Art)
`
`Appendix A-10
`
`§ 102/103 Prior Art to the ‘235 Patent (Charted Prior Art)
`
`Note that Appendix A charts ending in an even number are more comprehensive than the
`
`Appendix A charts that precede them and end in an odd number. For example, Appendix A-2
`
`contains each item of Prior Art listed in Appendix A-1 plus additional items of Prior Art that
`
`have been charted against the Asserted Claims of the ‘798 Patent.
`
`
`
`Appendix B contains lists of items of Prior Art that are believed to constitute § 103
`
`references and for which Prior Art charts were not prepared (Uncharted Prior Art). Appendix B
`
`is divided into 3 subparts, based upon the three different patent families.
`
`Appendix B-1
`
`
`Appendix B-2
`
`§ 103 Prior Art to the ‘798 and ‘854 Patents (Uncharted
`Configuration Prior Art)
`
`§ 103 Prior Art to the ‘400 and ‘350 Patents (Uncharted
`Pricing Prior Art)
`
`§ 103 Prior Art to the ‘235 Patent (Uncharted eCommerce
`Prior Art)
`
`In SAP’s Invalidity Contentions served in December 2007, Exhibits 1 – 136 were served,
`
`Appendix B-3
`
`which are prior art charts identifying specifically where in each item of charted prior art, each
`
`limitation of the Asserted Claims of the Patents-in-suit can be found. The Exhibits are organized
`
`as follows:
`
`8
`
`

`

`Exhibits 1- 39
`
`Charts of the Invalidating Prior Art to the ‘798 Patent
`
`Exhibits 40 - 78
`
`Charts of the Invalidating Prior Art to the ‘854 Patent
`
`Exhibits 79 - 95
`
`Charts of the Invalidating Prior Art to the ‘400 Patent
`
`Exhibits 96 - 117
`
`Charts of the Invalidating Prior Art to the ‘350 Patent
`
`Exhibits 118 - 136 Charts of the Invalidating Prior Art to the ‘235 Patent
`
`Appendices A and B and Exhibits 1-136 were served in December 2007, and are not
`
`being served again with SAP’s Amended Invalidity Contentions.
`
`On May 9, 2008, SAP’s Supplemental Invalidity Contentions brief, Appendices C and D,
`
`and Exhibits 137-176, were served.
`
`Appendix C is divided into 5 subparts, one for each of the Patents-in-suit, and lists the
`
`§ 102/103 Prior Art for each Patent-in-suit for which supplemental charts have been prepared
`
`and are being served on May 9, 2008. Appendices C-1, C-2, C-3, C-4 and C-5 are similar to
`
`Appendices A-2, A-4, A-6, A-8, and A-10, respectively, and their contents are as follows:
`
`Appendix C-1
`
`§ 102/103 Prior Art to the ‘798 Patent (Charted)
`
`Appendix C-2
`
`§ 102/103 Prior Art to the ‘854 Patent (Charted)
`
`Appendix C-3
`
`§ 102/103 Prior Art to the ‘400 Patent (Charted)
`
`Appendix C-4
`
`§ 102/103 Prior Art to the ‘350 Patent (Charted)
`
`Appendix C-5
`
`§ 102/103 Prior Art to the ‘235 Patent (Charted)
`
`Appendix D contains exemplary specific obviousness combinations of Prior Art set forth in
`
`Appendices A and C. Exemplary prior art combinations for the ‘400 and ‘350 Pricing Patents
`
`are set forth in a single Appendix D-3.
`
`Appendix D-1
`
`
`
`§ 103 Obviousness Combinations of Prior Art to the ‘798 Patent
`(Configuration Prior Art)
`
`9
`
`

`

`Appendix D-2
`
`
`Appendix D-3
`
`§ 103 Obviousness Combinations of Prior Art to the ‘854 Patent
`(Configuration Prior Art)
`
`
`Appendix D-4
`
`§ 103 Obviousness Combinations of Prior Art to the ‘400 and ‘350
`Patents (Pricing Prior Art)
`
`§ 103 Obviousness Combinations of Prior Art to the ‘235 Patent
`(eCommerce Prior Art)
`
`On May 9, 2008, Exhibits 137-176 of SAP’s Supplemental Invalidity Contentions were
`
`served, which are charts identifying specifically in each item of Prior Art where a description of
`
`each limitation of the Asserted Claims of the Patents-in-suit can be found. Exhibits 137-176 are
`
`organized as follows:
`
`Exhibits 137 - 147 Charts of the Invalidating Prior Art to the ‘798 Patent
`
`Exhibits 148 - 158 Charts of the Invalidating Prior Art to the ‘854 Patent
`
`Exhibits 159 - 161 Charts of the Invalidating Prior Art to the ‘400 Patent
`
`Exhibits 162 - 164 Charts of the Invalidating Prior Art to the ‘350 Patent
`
`Exhibits 165 - 176 Charts of the Invalidating Prior Art to the ‘235 Patent
`
`
`
`On November 10, 2008, SAP is serving its Amended Invalidity Contentions brief,
`
`Appendices E and F, and Exhibits 177- 254. Appendices E-1 – E-5 list the § 102/103 Prior Art
`
`for each Patent-in-suit for which supplemental charts have been prepared and are being served on
`
`November 10, 2008. Appendices E-6 – E-10 list § 103 Prior Art to the Patents-in-suit for which
`
`a chart has not been submitted. Appendix E is organized as follows:
`
`Appendix E-1
`
`§ 102/103 Prior Art to the ‘798 Patent (Charted)
`
`Appendix E-2
`
`§ 102/103 Prior Art to the ‘854 Patent (Charted)
`
`Appendix E-3
`
`§ 102/103 Prior Art to the ‘400 Patent (Charted)
`
`Appendix E-4
`
`§ 102/103 Prior Art to the ‘350 Patent (Charted)
`
`Appendix E-5
`
`§ 102/103 Prior Art to the ‘235 Patent (Charted)
`
`10
`
`

`

`Appendix E-6
`
`§ 103 Prior Art to the ‘798 Patent (Uncharted)
`
`Appendix E-7
`
`§ 103 Prior Art to the ‘854 Patent (Uncharted)
`
`Appendix E-8
`
`§ 103 Prior Art to the ‘400 Patent (Uncharted)
`
`Appendix E-9
`
`§ 103 Prior Art to the ‘350 Patent (Uncharted)
`
`Appendix E-10
`
`§ 103 Prior Art to the ‘235 Patent (Uncharted)
`
`
`
`On November 10, 2008, Appendices F-1 – F-5 are also being served. Appendix F
`
`contains exemplary specific obviousness combinations of Prior Art set forth in Appendices A, C,
`
`and E-1 – E-5. Appendix F is organized as follows:
`
`Appendix F-1
`
`Appendix F-2
`
`Appendix F-3
`
`Appendix F-4
`
`Appendix F-5
`
`§ 103 Obviousness Combinations of Prior Art to the ‘798 Patent
`(Configuration Prior Art)
`
`§ 103 Obviousness Combinations of Prior Art to the ‘854 Patent
`(Configuration Prior Art)
`
`§ 103 Obviousness Combinations of Prior Art to the ‘400 Patent
`(Pricing Prior Art)
`
`§ 103 Obviousness Combinations of Prior Art to the ‘350 Patent
`(Pricing Prior Art)
`
`§ 103 Obviousness Combinations of Prior Art to the ‘235 Patent
`(Order Management Prior Art)
`
`
`
`On November 10, 2008, Exhibits 177-254 are also being served. These Exhibits are
`
`organized as follows:
`
`Exhibits 177 - 185 Charts of Invalidating Prior Art to the ‘798 Patent
`
`Exhibits 186 - 196 Charts of Invalidating Prior Art to the ‘854 Patent
`
`Exhibits 197 - 204 Charts of Invalidating Prior Art to the ‘400 Patent
`
`Exhibits 205 - 212 Charts of Invalidating Prior Art to the ‘350 Patent
`
`Exhibits 213 - 254 Charts of Invalidating Prior Art to the ‘235 Patent
`
`
`
`11
`
`

`

`All Prior Art asserted to invalidate the Patents-in-suit under § 102 are also asserted as
`
`rendering obvious the claims of the Patents-in-suit under § 103. The assertion of an item of Prior
`
`Art as § 103 Prior Art should not be construed as an admission that it is not also § 102 Prior Art,
`
`especially since the Court has not yet issued claim construction orders on all Patents-in-suit, and
`
`SAP’s Motion for Clarification of the Court’s August 19, 2008 Claim Construction Order
`
`remains pending. Each chart of Prior Art specifically identifies where in each item of Prior Art
`
`each limitation of each Asserted Claim is found, providing both page citations and illustrative
`
`quotations (which are merely exemplary, and are not meant to be exclusive). Moreover, the
`
`exemplary combinations of Prior Art that render the Asserted Claims obvious, as set forth below
`
`and in the Appendices and Exhibits, are not limiting, and SAP reserves the right to supplement
`
`these contentions with further information on these and other obviousness contentions as
`
`appropriate.
`
`1.
`
`Invalidity of the Asserted Claims of the ‘798 Patent Under 35
`U.S.C. § 102
`
`a.
`
`All Asserted Claims of the ‘798 Patent Are Anticipated
`by the Prior Art Cited in Appendices A-1, C-1, E-1
`
`All Asserted Claims of the ‘798 Patent (Claims 1 - 6) are anticipated, either explicitly or
`
`inherently, under 35 U.S.C. § 102 by, for example, the Prior Art cited in Appendices A-1, C-1, or
`
`E-1. See Exhibits 177 - 185 for Supplemental Prior Art Charts. To the extent that any Prior Art
`
`identified as anticipatory in Appendices A-1, C-1, or E-1 is found to be missing an explicit
`
`teaching of one or more claim limitations, any such missing limitation is inherent within the
`
`system, patent or publication. Accordingly, such Prior Art anticipates the Asserted Claims.
`
`Illustrative examples of Prior Art from Appendices A-1, C-1, or E-1 that anticipate
`
`Claims 1 through 6 of the ‘798 Patent are set forth below:
`
`12
`
`

`

`Asserted ‘798 Claims
`Claim 1
`
`Claims 2-5
`
`Claim 6
`
`Exemplary § 102 Prior Art
`Systems: CADRES, CC, COSMOS, COSSACK, M1/MICON, MMC-
`Kon, PLAKON, Platypus, PLEX, SalesBUILDER, SPEx,
`R1/XCON/XSEL, XKEWB, R/2 and R/3 SAP Configurator.
`Publications or patents: Bennett U.S. Patent No. 4,591,983,
`Frayman (1987), Gero (1985), Hein (1989), Heinrich (7th IEEE
`Conference), Kramer (IEEE 1989), McDermott (1991), Mittal
`(1989), Neumann Thesis, Quintero U.S. Patent No. 5,293,479,
`Schwanke (1990), Stefik Textbook (1990), AI in Business, Science,
`and Industry (1986).
`
`Systems: CADRES, CC, COSMOS, COSSACK, M1/MICON, MMC-
`Kon, PLAKON, Platypus, PLEX, SalesBUILDER, SPEx,
`R1/XCON/XSEL, XKEWB.
`Publications or patents: Bennett U.S. Patent No. 4,591,983,
`Frayman (1987), Gero (1985), Hein (1989), Heinrich (7th IEEE
`Conference), Kramer (IEEE 1989), McDermott (1991), Mittal
`(1989), Neumann Thesis, Quintero U.S. Patent No. 5,293,479,
`Schwanke (1990), Stefik Textbook (1990), AI in Business, Science,
`and Industry (1986).
`
`Systems: CADRES, CC, COSMOS, COSSACK, M1/MICON, MMC-
`Kon, PLAKON, Platypus, PLEX, SalesBUILDER, SPEx,
`R1/XCON/XSEL, XKEWB, R/2 and R/3 SAP Configurator.
`Publications or patents: Bennett U.S. Patent No. 4,591,983,
`Frayman (1987), Gero (1985), Hein (1989), Heinrich (7th IEEE
`Conference), Kramer (IEEE 1989), McDermott (1991), Mittal
`(1989), Neumann Thesis, Quintero U.S. Patent No. 5,293,479,
`Schwanke (1990), Stefik Textbook (1990), AI in Business, Science,
`and Industry (1986).
`
`